Archive for the ‘Green Patents’ category

Philips Withdraws ITC Case as LED Patent Term Wanes

October 1st, 2009

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In a previous post, I discussed a patent infringement action in the U.S. International Trade Commission (ITC) between Philips Lumileds Lighting Co. (Philips) and Taiwanese LED maker Epistar Corp. (Epistar) involving U.S. Patent No. 5,008,718 (’718 Patent). 

In that case, Philips alleged that Epistar and United Epitaxy Company (UEC) infringed the ’718 Patent by selling certain AlGaInP LEDs.  The ’718 Patent is directed to an LED with a transparent window layer on top of the active semiconductor layers.

That post reported on a Federal Circuit decision reversing both an ITC limited exclusion order excluding Epistar’s LEDs from entry into the U.S. and an ITC ruling that Epistar couldn’t challenge the validity of the ’718 Patent.  

Philips recently moved to withdraw its complaint and terminate the investigation because the ’718 patent would expire on December 18, 2009, before the ITC could conduct further proceedings in the case.

An ITC administrative law judge (ALJ) granted the motion, and earlier this month the ITC issued a Notice of its determination not to review the ALJ’s decision to terminate the investigation.

Though the ITC case is over, a lawsuit between Philips and Epistar in U.S. District Court for the Northern District of California remains pending, and Philips noted in its motion that it is not waiving any of its rights in that suit. 

GE Asserts Wind Power Patents Against Mitsubishi Again

September 27th, 2009

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The General Electric Company (GE) is the U.S. leader in installed wind capacity, and patent enforcement plays a part in that success.  Earlier this month GE sued Mitsubishi in the Southern District of Texas, alleging that its Japanese competitor’s 2.4MW turbine models infringe U.S. Patent Nos. 5,083,039 (’039 Patent), 6,921,985 (’985 Patent) and 7,321,221 (’221 Patent).

The complaint (ge_complaint.pdf) cites the sale and installation of Mitsubishi’s turbines at the Penascal and Gulf Wind wind farms in Kenedy County, Texas as infringing activities.

The asserted patents relate to energy conversion and control technology for wind turbines.  The ’039 Patent, which issued back in 1992, is directed to a variable speed wind turbine that provides responsive control of generator torque.  The patented turbine controls the torque reacted by the generators (16, 18) by controlling the stator currents or voltages and basing commands on turbine performance parameters.

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Shaft speed sensors (42, 44) monitor the rotor speed of the generators and supply rotor speed information to the generator controllers (38, 40) and to a torque command device (46).  Specifically, the torque command device (46) monitors wind turbine performance parameters and sends torque control signals to the generator cotrollers (38, 40) and pitch angle control signals to a pitch control unit (48). 

The ’985 Patent is directed to a wind turbine that includes a blade pitch control system and a turbine controller coupled with the blade pitch control system.  To increase the reliability of the turbine’s power supply, the turbine controller causes the blade pitch control system to vary pitch in response to transitions between different power sources.

The ’221 Patent is directed to improved methods for stabilizing the supply voltage to a wind turbine after voltage drops without jeopardizing the electrical components of the turbine.  According to the ’221 Patent, a key step in the patented method is to resume feeding of the rotor current after variations in voltage amplitude cause decoupling of the feed-in unit.

This lawsuit appears to be the second part of a two-pronged strategy to enforce these patents against Mitsubishi.  As mentioned in the complaint, GE obtained an initial favorable decision from the U.S. International Trade Commission (ITC) that Mitsubishi had not successfully challenged the validity and enforceability of these patents and that the accused wind turbines infringe the patents (ge_itc_initial_determination.pdf) (see the CleanIP blog post here).

The ITC action and this new federal court case squeeze Mitsubishi both with respect to importation of its turbines at the U.S. border and as to domestically produced equipment.

Excluded Icon? Paice ITC Action Seeks Prius Importation Ban

September 24th, 2009

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A U.S. patent historically has provided its owner with an almost absolute right to exclude others from making, using, selling and offering to sell the patented product.  That all changed with the U.S. Supreme Court’s eBay v. MercExchange decision in 2006.

In eBay the Supreme Court reversed the U.S. courts’ long-standing practice of automatically issuing an injunction upon a finding of patent infringement and instead held that the traditional four-factor equitable test for injunctive relief must be analyzed in each case.

The timing of the eBay decision couldn’t have been worse for hybrid technology company Paice, LLC (Paice).  Back in 2005, Paice sued Toyota in the Eastern District of Texas alleging that the second generation Prius, the Highlander and the Lexus RX400h sport utility vehicle infringed U.S. Patent Nos. 5,343,970 (’970 Patent), 6,209,672 and 6,554,088

In December of 2005, a jury found that the accused vehicles did not literally infringe Paice’s patents but did infringe two claims of the ’970 Patent under the doctrine of equivalents.  The jury awarded about $4.3 million in past damages.

Having succeeded on infringement, Paice moved for a permanent injunction.  Less than a month after the hearing on the injunction motion, but before the district court ruled on it, the Supreme Court handed down the eBay decision.

The court was now bound to analyze the four injunction factors.  As a result, the court refused to grant an injunction, instead awarding Paice an ongoing royalty of $25 per infringing vehicle (a figure that was later raised to $98 per vehicle).

As of the date of this writing, two other district court cases between Paice and Toyota over hybrid vehicle technology remain pending in the U.S. district courts.

Denied an injunction by the district court, the court-imposed ongoing royalty affirmed in principle by the Federal Circuit, Paice has pursued Toyota but hasn’t gotten any exclusion satisfaction out of its hybrid vehicle patents. 

That may be about to change.

Earlier this month, Paice filed a complaint in the U.S. International Trade Commisson (ITC) asking the ITC to investigate whether Toyota’s importation of the third generation Prius, the Camry Hybrid, the Lexus HS250h and RX450h (Accused Products) infringe the ’970 Patent.

The ITC is a federal agency that investigates trade and importation issues, including conducting quasi-judicial proceedings involving alleged infringement of intellectual property rights by importation of accused products pursuant to 19 U.S.C. § 1337.  It is a popular forum for patentees (though only injunctive relief is available, not monetary damages) because the proceedings progress much faster than those in the federal courts.

According to the complaint (paice_itc_complaint.pdf), Toyota has made judicial admissions in the form of discovery responses and stipulations in the prior district court actions that the drivetrains of the Accused Products are materially the same as those that were found to infringe the ’970 Patent.

Moreover, Paice asserts, Toyota is precluded from challenging the infringement, validity and enforceability of the ’970 Patent because those issues were “fully and finally litigated against Toyota” in the district court, giving rise to collateral estoppel. 

Paice further asserts that res judicata also precludes Toyota from challenging infringement of the ’970 Patent because the Accused Products are materially identical to the vehicles found to be infringing in the district court case.

According to Paice, that leaves only issues relating to “domestic industry,” which all ITC complainants must prove.  Section 337 requires there be an industry in the U.S. relating to the products at issue.  This includes an economic prong (demonstrated investment in plant/equipment, labor/capital, research and development or licensing) and a technical prong (demonstrated practice of the asserted intellectual property right).

Paice alleges it meets the domestic industry requirement because of its engineering, research and development activities and its licensing activities in the U.S.

Paice is requesting a permanent limited exclusion order barring entry into the U.S. of the Prius, Camry hybrid and the two accused Lexus models.  With this ITC action, Paice is ratcheting up the pressure on Toyota to pay a large sum in settlement and/or licensing fees. 

Considering what’s at stake here, I’m surprised the Paice complaint hasn’t gotten more media attention.  I don’t think it’s an exaggeration to say this could be the Blackberry case of clean tech and one of the biggest green patent stories we’ve seen so far.

Q2 2009 Sees Record No. of U.S. Green Patents; EPO and UN Study Green Patent Licensing

September 17th, 2009

There’s some catching up to do on green patent developments.  First, the 2009 second quarter report of the Heslin Rothenberg firm’s Clean Energy Patent Growth Index (CEPGI) came out last month.  CEPGI tracks clean tech patent filings in the U.S.

According to CEPGI, 274 clean tech patents were granted in the U.S. in the second quarter of 2009 – the highest quarterly total ever. 

Fuel cell patents led the pack with 156 granted patents, followed by wind power technology (43) and solar (36).  All of those categories saw increases from the first quarter of 2009.

Although hybrid/electric vehicle patents fell from 30 in the first quarter to 20 in the second quarter, automotive companies still obtained the most clean tech patents.  Honda led with 17, GM had 15 and Toyota 12.

What happens to all of these green patents after they are granted?  The European Patent Office (EPO), along with the U.N. Environment Programme and the International Centre for Trade and Sustainable Development, is trying to find out.

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To better understand the role of patents in transfer of and access to clean technologies, the EPO is conducting a survey on licensing practices in the area of environmentally sound technologies (ESTs).  ESTs are defined as:

technologies that protect the environment, are less polluting, use resources in a more sustainable manner, recycle more of their waste and products, or handle residual waste in a more acceptable manner than the technologies they substitute

The survey was launched in early August and information collection is set to close on September 25th.

The EPO hopes the results and findings of the study will provide guidance for the U.N. Framework Convention on Climate Change Conference in Copenhagen in December, where IP rights and transfer of clean technologies is likely to be a hotly contested topic.

Florida Power & Light Accused of Infringing Smart Grid Patents

August 19th, 2009

Sipco LLC (Sipco) is an Atlanta, Georgia-based developer of wireless mesh technology. 

Last month Sipco sued Florida Power & Light Co. and FPL Group Inc. (collectively “FPL”) in federal court in Miami, alleging that the wireless network technology in the utility’s smart grid system infringes three Sipco patents relating to smart grid technology.  According to the complaint (sipco_complaint.pdf), the infringing technology is being used as part of the Energy Smart Miami initiative to implement smart grid technology in Miami-Dade County.

The family of patents-in-suit comprises U.S. Patent Nos. 6,437,692, 7,053,767 and 7,468,661, each entitled “System and method for monitoring and controlling remote devices” (collectively “Sipco Patents”).

The Sipco Patents are directed to cost effective methods and systems for collecting, formatting and monitoring data from remote devices.  A control system (200) consists of one or more sensor/actuators (212, 214, 216, 222, 224) each integrated with a (preferably RF, or radio frequency) transceiver.  The control system also includes stand-alone transceivers (211, 213, 215, 221). 

 

The integrated and stand-alone transceivers (211, 213, 215, 221) are configured to receive an incoming RF transmission (from remote devices) and to transmit an outgoing signal.  Local gateways (210, 220) receive remote data transmissions from the integrated or stand-alone transceivers (211, 213, 215, 221), analyze the transmissions, convert them into TCP/IP format for internet transmission and communicate the transmissions via wide area network, or WAN (230).

According to the Sipco Patents, having the local gateways (210, 220) permanently integrated with the WAN (230) allows the server (260) to host application specific software that previously had to be hosted in application specific local controllers.  The Sipco Patents explain:

…the data monitoring and control devices of the present invention need not be disposed in a permanent location as long as they remain within signal range of a system compatible transceiver that subsequently is within signal range of a local gateway interconnected through one or more networks to server 260. 

The patented system avoids the expense of installing and connecting local networks of sensors, actuators and controllers, as was previously done in control system solutions for distributed systems.

The complaint alleges willful infringement and seeks treble damages and injunctive relief.

Quantum Dot Rivals Settle Patent Suit

August 15th, 2009

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In a previous post I discussed a patent infringement suit between Palo Alto nanotechnology company Nanosys and its Manchester, U.K. rival, Nanoco Technologies (Nanoco), involving Nanoco’s quantum dot technology. 

In that suit, Nanosys alleged that Nanoco and Nanoco’s U.S. distributor, Sigma-Aldrich, were infringing U.S. Patent Nos. 6,861,155 (’155 patent), 6,322,901 (’901 patent), 7,125,605 (’605 patent, 6,821,337 (’337 patent) and 7,138,098 (’098 patent) by making and selling quantum dot technology sold under the brand name Lumidots (nanosys_complaint.pdf).

Quantum dots are nano-scale semiconductors that emit near-monochromatic light when subjected to light or electrical stimulation.  Among the many applications of quantum dots are diode lasers, LEDs and solar cells.

Last month Nanosys announced that it had reached a settlement with Nanoco.  According to the press release, Nanoco agreed to terminate its Lumidots business in the U.S. but did not admit infringement or validity of the asserted patents. 

The asserted patents include two patent families: the ’155, ’901 and ’605 patents are entitled ”Highly luminescent color selective nanocrystalline materials” and are directed to nanocrystal particles having a semiconductor core and a semiconductor coating that emit light in a narrow spectral range.  The core consists of cadmium sulfur, cadmium selenium or cadmium tellurium, and the coating is zinc sulfur or zinc selenium.

The ’337 and ’098 patents, entitled”Preparation of nanocrystallites,” are directed to nanocrystallite manufacturing methods.  The ’337 patent describes the method as follows:

The method includes contacting a metal, M, or an M-containing salt, and a reducing agent to form an M-containing precursor, M being Cd, Zn, Mg, Hg, Al, GA, In or Tl.  The M-containing precursor is contacted with an X-donor, X being O, S, Se, Te, N, P, As, or Sb.  The mixture is then heated in the presence of an amine to form the nanocrystallite.

In Hybrid Vehicle Suit Paice Severs Lexus Nexus

August 12th, 2009

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In the hybrid vehicle patent war between hybrid technology company Paice LLC (Paice) and Toyota Motor Corp. (Toyota), Paice has withdrawn from one front after the parties reached a very limited truce.

Specifically, Paice agreed to a covenant not to assert U.S. Patent No. 5,343,970 (’970 patent) against the Lexus GS450h and the Lexus LS600h and recently filed a Second Amended Complaint (paice-amended-complaint.pdf) in a lawsuit in the Eastern District of Texas dropping allegations that the two Lexus models infringe the ’970 patent.

The suit, which Paice originally filed in July of 2007, now alleges that the Toyota Camry hybrid infringes the ’970 patent and that the second generation Prius, the Highlander SUV, the Lexus RX400h SUV, the Camry hybrid and the two other Lexus models infringe the ’970 patent as well as U.S. Patent Nos. 7,104,347 and 7,237,634.

The ’970 patent is directed to a hybrid drive train that uses a microprocessor (48) and a controllable torque transfer unit (28) that accepts torque input from both an internal combustion engine (40) and an electric motor (20). 

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The microprocessor (48) controls the amount of torque provided by the internal combustion engine (40) and the electric motor (20) by locking or releasing a bevel gear assembly (not shown) and holding torque inputs constant.

Paice and Toyota have an ongoing history of litigation over Paice’s hybrid vehicle patents.  In the fall of 2007, the Federal Circuit affirmed a jury verdict that the Prius, Highlander and Lexus SUV infringed two claims of the ’970 patent under the doctrine of equivalents. 

In that case Paice was awarded about $4.3 million in past damages and an ongoing royalty of $98 per infringing vehicle soldPaice later sued Toyota again, asserting that the Highlander and Lexus SUV infringed U.S. Patent No. 7,392,871.

 

ITC Ends Rothschild LED Patent Infringement Investigation Against Xiamen

August 8th, 2009

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In a previous post, I wrote about the U.S. International Trade Commission’s (ITC) investigation of six companies based in China and Taiwan, prompted by a complaint by retired Columbia University Professor and LED innovator Gertrude Neumark Rothschild.  In the complaint, Rothschild asserted infringement of U.S. Patent No. 5,252,499 (’499 patent) relating to LED manufacturing methods.

The Notice of Investigation named Chi Mei Lighting Technology Corp., Tekcore Co. Ltd., Toyolite Technologies Corp., Tyntek Corp., Visual Photonics Epitaxy Co. and Xiamen Sanan Optoelectronics Technology (“Xiamen”).

The ITC recently let the investigation against Xiamen come to end when it ruled that it would not review the decision of an adminstrative law judge (ALJ) to end the investigation (xiamen_order.pdf).   The ALJ’s decision followed Xiamen’s request to terminate the investigation in view of a proposed consent order.

In the consent order, Xiamen, without admitting infringement or validity of the ’499 patent, agreed not to import LED and laser diode chips that allegedly infringe the ’499 patent.  The consent order also provided that it would be nullified if the ’499 patent were to be held invalid or unenforceable in a final decision by any administrative or judicial body.

The ’499 patent is directed to methods of making LEDs capable of emitting short wavelength (green or blue) light.  The patent addresses the problem of “doping” wide band gap semiconductor materials, an essential step in creating adequate conductance for the materials to function as LEDs.  Doping means adding impurities to a semiconductor to increase the number of free charge carriers.

Rothschild has aggressively asserted the ’499 patent and U.S. Patent No. 4,904,618 in recent years.  Last year Rothschild filed a complaint in the ITC naming more than 25 respondents, including electronics giants Hitachi, LG, Matsushita, Motorola, Nokia, Samsung, Sony and Toshiba.  At least eight companies have taken licenses to her patents.

ExxonMobil Partners with Synthetic Genomics to Develop Algal Biofuels

August 6th, 2009

Synthetic Genomics, Inc. (SGI) is a San Diego biotech company that develops biofuels using genetic engineering and other genomic and microbiological techniques.

Last month SGI announced that it has entered a multi-year research and development agreement with ExxonMobil Research and Engineering Company (EMRE) to develop next generation biofuels using photosynthetic algae. According to SGI’s press release, total funding for R & D and milestone payments could total more than $300 million. 

SGI will use its proprietary tools and technologies in genomics, metagenomics, synthetic genomics and genome engineering to develop superior strains of algae for commercial scale production of biofuels.  SGI owns several pending patent applications relating to these tools and technologies. 

U.S. Application No. 2007/0264688 (’688 application) is entitled “Synthetic genomes” and is directed to methods of constructing synthetic genomes and introducing them into vesicles (cells or synthetic membrane-bound “cells”). 

The ’688 application describes generating small nucleic acid fragments, assembling them into cassettes, cloning the cassettes, assembling the cassettes into a genome, and transferring the synthetic genome into a biochemical system.  The end products produced by the biochemical systems have various applications such as energy sources (e.g., hydrogen or ethanol), therapeutics and industrial polymers.

According to the ’688 application, selection and construction of synthetic genome sequences (as opposed to conventional genetic engineering techniques) allows for easier manipulation of genetic sequences and construction of novel organisms and biological systems.

U.S. Application No. 2007/0269862 (’862 application) is directed to methods for installing a genome into a cell or cell-like system.  The genome may comprise supercoiled nucleic acid molecules (102) with scaffolding proteins (104).  The nucleic acids may also have ribosomes (106).

The supercoiled nucleic acid molecules (102) may be accompanied by small molecules (108) and single stranded nucleic acid molecules (110).  The genomes are introduced into a membrane bound aqueous volume (112) such as a lipid vesicle.

Claim 1 of the ’862 application is rather broad:

1.  A method for making a synthetic cell, the method comprising:

obtaining a genome that is not within a cell; and

introducing the genome into a cell or cell-like system.

U.S. Application No. 2009/0176280 is directed to a method for isothermal amplification of small amounts of DNA or cell-free cloning of the DNA.

Other SGI pending applications include U.S. Application Pub. No. 2007/0037196 and U.S. Application Pub. No. 2007/0037197 (relating to in vitro methods for joining two double-stranded DNA molecules) and U.S. Application No. 2007/0122826 (relating to a minimal essential gene set that codes for a free-living organism).

One theme that runs throughout SGI’s portfolio of patent applications is impatience with the limits of existing genetic engineering methods and a desire for better techniques to shatter those limits, which SGI may have found in its synthetic genome technology.  This “Description of the Related Art” from the ’688 application captures that sentiment:

Conventional genetic engineering techniques are limited to allowing manipulation of existing sequences.  It would thus be desirable to have the ability to implement dramatic alterations and arrangements of genetic content, beyond that made possible by conventional techniques.  Consequently, there is a need for synthetic genomes.

Green Patent Acquisitions: Rentech Buys SilvaGas Gasification Technologies

August 4th, 2009

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Rentech, Inc. (Rentech) is a Los Angeles company that provides clean energy solutions including biomass gasification technology and processes for converting synthetic gas (syngas) into synthetic jet fuel and diesel fuels.

Last month Rentech announced that it had completed the acquisition of Atlanta-based SilvaGas Corporation (SilvaGas) and SilvaGas’s commercial-scale biomass gasification technology, which converts urban waste feedstocks into syngas.

According to the press release, the acquisition will enable Rentech to offer integrated packages for renewable fuels and power production by combining the SilvaGas gasification technology with Rentech’s syngas conversion, conditioning and cleanup technology.

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The SilvaGas patent portfolio includes several patents and pending applications relating to high-throughput gasifier technology.  The original SilvaGas process was protected by U.S. Patent No. 4,828,581 (’581 patent), entitled “Low input gas velocity high throughput biomass gasifier”.  The ’581 patent expired in 2006.

The ’581 patent describes a process of rapidly heating biomass with hot sand using a reactor that has a fluid bed of sand.  According to the ’581 patent:

This invention comprises the unexpected discovery that it is possible to gasify biomass at very high wood throughputs but in an entrained gasifier operating at low inlet gas velocities.

Entrained gasifiers perform gasification reactions in a cloud of fine particles, which can be solids, atomized liquid fuels or fuel slurries.

Another key SilvaGas patent is U.S. Patent No. 6,613,111 (’111 patent), entitled “Small scale high throughput biomass gasification system and method”.  The ’111 patent is directed to a high-throughput combination gasifier and combustor wherein the gasifier is concentrically housed within the combustor. 

The gasifier system includes a gasifier (102) and a combustor (118).  The combustor (118) acts as a source of heat to drive the gasification reactions in the gasifier (102).  The gasifier (102) and combustor (118) transfer heat and materials to each other via circulation of a particulate inert material, such as sand, which is fluidized by gas flowing through the material. 

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A fluidizing gas inlet (110) provides a flow of gas into the gasifier (102), and gas exits the gasifier at exit (112), flows through a separator (114), and exits as product gas through product gas exit (116).  Biomass feedstock is introduced through the entry opening (106), and the particulate material travels from the combustor (118) into the gasifier (102) through a recirculation opening (108).

According to the ’111 patent, the arrangement of the gasifier (102) concentrically within the combustor (102) minimizes heat loss from the surface of the gasifier and improves the efficiency of the system.  This helps to make the patented system suitable for small scale gasification having a relatively low feedstock input rate.

Most of the other SilvaGas patents and applications are directed to improvements or variations of these core technologies, including U.S. Patent No. 6,808,543 (methods for reducing ash agglomeration, reducing erosion and facilitating sand flow), U.S. Patent No. 6,680,137 (an energy system connecting a gasifier and a combustor to a fuel cell) and U.S. Application Pub. No. 2008/0022592 (a more efficient gasification system having certain diameter and height specs).